Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  November 26, 2019

 

This Office action responds to applicant’s communication filed on November 20, 2019.  Because this Office action raises new issues, it is made non-final.

 

 

Results of Trademark Act Section 2(d) Search

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

 

Application Not Entitled to Register – Two or More Pending Applications with Earlier Filing Dates

 

The filing dates of pending U.S. Application Serial Nos. 87680990 and 87692821 precede applicant’s filing date.  Please see the referenced applications at Attachment 1.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

Requirement Satisfied

 

The requirement to specify and meet the requirements for at least one filing basis is satisfied by the assertion of a Section 1(b) basis in each international class, along with the required statement and signed verification.  TMEP §713.02.

 

 

Summary of Issues that Applicant Must Address

 

1.     Requirement to Clarify the Identification of Goods and Services

2.     Multiple Class Requirements - Sections 1(b) and 44

3.     Proposed Amendment to Assert a Basis Based on Section 44(d) is Unacceptable

4.     Requirement for a True Copy of Applicant’s Foreign Registration

 

 

Requirement to Clarify the Identification of Goods and Services

 

THIS REQUIREMENT APPLIES ONLY TO THE PARTICULAR GOODS AND SERVICES INDICATED BELOW.

 

In previous Office actions, applicant was required to clarify the identification of goods and services because it included wording that was indefinite, overly broad or otherwise unacceptable.  See TMEP §1402.01.  In response to this requirement, applicant submitted an amended identification of goods and services.  Applicant’s amended identification is unacceptable because it still contains indefinite, overly broad or unacceptable wording.  Therefore, the requirement to clarify the identification of goods and services is CONTINUED and MAINTAINED.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

International Class 6

 

The wording “flex connectors” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could encompass “flex structural joint connectors” of metal in International Class 6 and “flex electrical connectors” of metal in International Class 9.  Therefore, applicant must clarify the nature of the flex connectors to enable proper classification.

 

International Class 9

 

The wording “Vibration control equipment for attenuating vibration in buildings,” “vibration isolation equipment for isolating vibration in buildings,” and “noise control equipment related to attenuating vibration in buildings” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “vibration sensors” are classified in International Class 9 because they are an electronic sensing apparatus, while “rubber bearings for seismic isolation of buildings” are classified in International Class 19 as a non-metal building material.  It is not sufficient to indicate the purpose of the goods; each clause must be clarified to specify the particular types of such equipment using the common commercial or generic names for the goods to enable proper classification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “pressure vessels related to equipment connectors and system connectors” in the identification of goods is indefinite and must be clarified to specify the purpose and material composition of the goods to enable proper classification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, “pressure vessels related to equipment connectors and system connectors, namely, liquefied gas storage tanks of metal” are classified in International Class 6.  Without further information about the nature of the goods, the examining attorney is unable to offer other suggested language.

 

The wording “power piping for providing water and/or steam and/or water and in a building for the purposes of heating and cooling” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Pipes that connect directly to sanitary installations such as sinks, showers, faucets, and toilets are classified in International Class 11.  Other types of water pipes are classified by material composition, with metal water pipes in International Class 6 and non-metal water pipes in International Class 19.  Pipes for heating boilers are classified in International Class 11, while polyethylene pipes used in geothermal heating and cooling systems are classified in International Class 19.  Therefore, applicant must specify the particular uses of the power piping, as well as the material composition of the piping, to enable proper classification of the goods.

 

The wording “electronic equipment, products, and components, namely, electronic sensors and controllers” in the identification of goods is indefinite and must be clarified to specify what phenomenon the electronic sensors sense (e.g., vibration, sound) and what goods the electronic controllers control.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “safety equipment for precluding falling of persons” in the identification of goods is indefinite and must be clarified to specify the types of such equipment using the common commercial or generic names for the equipment.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “seismic equipment, namely, fasteners, restraints, shaker tables, mounts, bumpers, brackets, frames, earthquake proofing equipment” in the identification of goods is indefinite and must be clarified because most of this language does not appear to identify any goods in International Class 9.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  To the extent these are types of construction materials and hardware, they may be classified in International Class 6, 17, 19 or 20 depending on the nature and material composition of the goods.  For example, the wording “mounts,” “brackets” and “fasteners” could include “seismic equipment, namely, metal fasteners in the nature of bolts, washers and screws, and metal mounting brackets for general use” in International Class 6 and “seismic equipment, namely, non-metal fasteners in the nature of bolts, washers and screws, and non-metal mounting brackets for general use” in International Class 20.  If the term “shaker tables” refers to electronic seismic testing equipment, then this must be clarified, such as “electronic seismic testing equipment, namely, shaker tables for testing seismic activity” in International Class 9.  The wording “restraints,” “bumpers,” and “frames” is too vague and must be amended to further describe the nature, purpose and material composition of the goods to enable proper classification.  For example, “seismic equipment, namely, non-metal door frames” would be classified in International Class 19.

 

International Class 20

 

The wording “non-metal hardware, namely, . . . flex connectors” in the identification of goods is indefinite and must be clarified to identify the nature of the connectors in International Class 20.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “non-metal hardware, namely, . . . general use isolation . . . pads” in the identification of goods is indefinite and must be clarified because the term “pads” does not appear to identify any goods in International Class 20. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.   Applicant must either delete the reference to “pads” or clarify this term to describe the nature of the goods in International Class 20.

 

International Class 35

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

The proposed amendment identifies the following services in International Class 35:  “Business project management services.” 

 

This portion of the proposed amendment is beyond the scope of the original identification because while the original identification included various clauses with “project management” services, of which business project management is a particular type, all of the clauses in the original identification identifying “project management” services are limited to particular fields, e.g., “vibration control,” “vibration isolation,” “environmental noise control,” “noise control, “commercial buildings and structures,” “institutional buildings and structures,” “OEM operations and products,” “architectural vibration control” and “acoustics,” among other fields.  Therefore, so as not to exceed the scope of the original identification, applicant must limit the business project management services to one or more of these fields.

 

International Class 40

 

The wording “Custom fabrication of springs, springs, spring mounts, spring hangers, seismic mounts, bracing, flex connectors, floating floors, solar panel mounts, pipes, pipe fittings, isolation mounts and pads, and rubber bearings, all for seismic, vibrational, and thermal management purposes” is unacceptable because it broadens the scope of the original identification.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  In particular, the original identification does not include custom fabrication of goods of these types “for seismic, vibrational, and thermal management purposes” without further limitation as to the nature or application of the goods.  Therefore, applicant must amend the description so as to clearly identify services within the scope of the original identification.  Applicant must also delete the redundant word “springs.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

International Class 42

 

The wording “installation, maintenance and repair of computer software for vibrational, seismic, solar energy, waste water, and thermal activity management and monitoring” in the identification is unacceptable because this language isn’t encompassed by the original identification.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  In particular, the original identification does not include any services pertaining to “computer software for vibrational, seismic, solar energy, waste water, and thermal activity management and monitoring” or any other language that would encompass these services.  The original identification does not include the term “software” at all.  Therefore, this clause must be deleted because it exceeds the scope of the original identification.

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

Suggested Amendments

 

Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in applicant’s version of the identification of goods and/or services that should be removed, it will be shown in bold with a line through it such as this: strikethrough.  Applicant should enter its amendments in standard font.  If applicant wishes to accept the suggested deletions, applicant must manually delete the struck through wording in any USPTO response form.  Copying and pasting the language below will not result in deletion of the struck through wording, which will remain within the identification.

 

Applicant may adopt the following identification of goods and services, if accurate:

 

International Class 6:  Metal construction materials, namely, springs, general-use spring mounts, spring hangers, general-use seismic mounts, bracing for handling loads, flex connectors in the nature of expansion joints for piping and ducting, floating floors, solar panel mounts, pipes, pipe fittings, HVAC ducts, metal fasteners, namely, bolts, nails, rivets, screws, nuts, general-use clips, washers, lock washers, all-purpose straps, clamps; containers of metal for containing pressurized chemicals, gases and liquids; power piping for providing water and/or steam, namely, {specify types in Class 6 only, e.g., metal water pipes}

 

International Class 9:  Vibration control equipment for attenuating vibration in buildings, namely, {specify types in Class 9, e.g., vibration sensors and vibration meters}; vibration isolation equipment for isolating vibration in buildings; noise control equipment related to attenuating vibration in buildings; pressure vessels related to equipment connectors and system connectors; power piping for providing water and/or steam and/or water and in a building for the purposes of heating and cooling; electronic equipment, products, and components, namely, electronic sensors for detecting {indicate phenomenon, e.g., vibration and sound} and electronic controllers for {indicate goods, e.g., vibration meters}; safety equipment for precluding falling of persons, namely, harnesses and lanyards for fall restraint and fall arrest; electronic seismic testing equipment, namely, fasteners, restraints, shaker tables for testing seismic activity, mounts, bumpers, brackets, frames, earthquake proofing equipment

 

International Class 11:  Power piping for providing water and/or steam, namely, {specify types in Class 11 only, e.g., pipes being parts of sanitary facilities, pipes for heating boilers}

 

International Class 17:  Acoustic, vibrational, seismic and thermal insulation and insulators for use in HVAC, seismic, vibration control, and thermal construction applications; flexible pipes, not of metal; construction products, namely, fittings, not of metal, for pipes; noise control equipment related to attenuating vibration in buildings, namely, sound dampening blankets, sound control flooring underlayment, architectural acoustic products in the nature of sound absorbers and diffusers

 

International Class 19:  Non-metal construction materials, namely, floating floors, rigid pipes, braces; Rubber bearings for seismic isolation of buildings; vibration isolation equipment for isolating vibration in buildings, namely, rubber bearings for seismic isolation of buildings; power piping for providing water and/or steam and/or water in a building for the purposes of heating and cooling, namely, {specify types in Class 19 only, e.g., non-metal water pipes, polyethylene pipes used in geothermal heating and cooling systems}

 

International Class 20:  Non-metal hardware, namely, springs, general-use spring mounts, spring hangers, general-use seismic mounts, bracing for handling loads, flex connectors in the nature of {specify types in Class 20 only, e.g., nuts and bolts}, general-use isolation mounts and pads, solar panel mounts

 

International Class 35:  Business project management services in the fields of {specify relevant fields from the original application, e.g., architectural vibration control}

 

International Class 40:  Custom fabrication of structural components for buildings, namely, springs, springs, spring mounts, spring hangers, seismic mounts, bracing, flex connectors, floating floors, solar panel mounts, pipes, pipe fittings, isolation mounts and pads, and rubber bearings, all for seismic, vibrational, and thermal management purposes; water treatment and purification

 

International Class 42:  Vibration control, vibration isolation, seismic, solar energy, waste water, and thermal engineering services; Design of engineered products for others in the fields of vibrational control, vibration isolation, seismic, solar energy, waste water, and thermal engineering; Design and development of apparatus and machines in the field of vibration control, vibration isolation, seismic, solar energy, waste water, and thermal engineering; testing, analysis, and evaluation of the seismic equipment, products, systems, and supplies of others to determine conformity with certification standards; testing, analysis, and evaluation of seismic equipment, products, systems, and supplies of others to assure compliance with industry standards; installation, maintenance and repair of computer software for vibrational, seismic, solar energy, waste water, and thermal activity management and monitoring; Advanced product research in the field of artificial intelligence; consulting services in the field of industrial and workplace building automation

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

Multiple Class Requirements – Sections 1(b) and 44

 

Applicant must clarify the number of classes for which registration is sought.

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 6, 9, 11, 17, 19, 20, 35, 40, and 42.  See 37 C.F.R. §2.32(a)(7), 2.85; TMEP §805, 1401.

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 9 classes; however, applicant submitted fees sufficient for only 8 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

Proposed Amendment to Assert a Basis Based on Section 44(d) is Unacceptable

 

Applicant requests that the U.S. application be amended to add a claim of priority under Trademark Act Section 44(d) as an additional filing basis.  Although the U.S. application was properly filed within six months of the foreign filing, applicant did not claim priority within six months of the foreign application filing date; therefore the priority claim is invalid and cannot be accepted.  TMEP §1003.02.  Specifically, the foreign application was filed on June 18, 2018; however, the claim of priority was asserted on November 20, 2019.

 

To receive a priority date in a U.S. application based on a previously filed foreign application, the claim of priority must be filed within six months of the filing date of the foreign application.  37 C.F.R. §§2.34(a)(4)(i), 2.35(b)(5); TMEP §806.01(c); see 15 U.S.C. §1126(d)(1). 

 

Therefore, the Section 44(d) filing basis will not be entered.

 

 

Requirement for a True Copy of Applicant’s Foreign Registration

 

In applicant’s response filed on November 20, 2019, the application was amended to specify a basis under Trademark Act Section 44(e); however, applicant did not provide a copy of a foreign registration.  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration upon which applicant intends to rely has not yet issued, then applicant must delete the Section 44(e) basis at this time.  Furthermore, applicant may not request suspension of the application pending issuance of the foreign registration because the instant application is not based on Section 44(d).  See TMEP §716.02(b).

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

If applicant has any questions about this Office action, please contact the undersigned examining attorney.

 

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

p. 571.272.7187

linda.lavache@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon. 

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 26, 2019 for

U.S. Trademark Application Serial No. 88003663

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

p. 571.272.7187

linda.lavache@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 26, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”